Adrain v. Vigilant Video, Inc. et al
Filing
88
MEMORANDUM OPINION AND ORDER - the Court DENIES Plaintiff John B. Adrains Emergency Motion to Stay Pending Outcome of Reexamination. Signed by Judge Rodney Gilstrap on 3/20/2012. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
JOHN B. ADRAIN
Plaintiff,
v.
VIGILANT VIDEO, INC., et al.,
Defendants.
§
§
§
§ CIVIL ACTION NO. 2:10-cv-173-JRG
§
§
§
§
§
MEMORANDUM OPINION AND ORDER
I.
Introduction
Before the Court is Plaintiff John B. Adrain’s (“Adrain”) Emergency Motion to Stay
Pending Outcome of Re-Examination (“Motion”). (Dkt. No. 78.) The Court set an expedited
briefing schedule (Dkt. No. 79) and the matter has now been fully briefed. After carefully
considering the parties’ written submissions, the Court DENIES the Motion.
II.
Facts
Adrain filed this suit on May 26, 2010, alleging that Defendants Vigilant Video, Inc.
(“Vigilant”) and The City of Port Arthur, Texas (“Port Arthur”) (collectively, “Defendants”)
infringe claims 1-3 and 6-11 of U.S. Patent No. 5,831,669 (“the ‘669 patent”). A docket control
order was entered in this case over a year ago, setting the Markman hearing for April 11, 2012.
(Dkt. No. 49.) The discovery deadline for claim construction issues passed on January 15, 2012
and the parties have prepared and exchanged P.R. 4-5(a)-(c) claim construction materials. (Dkt.
No. 49.) Jury selection is set for June 3, 2013.
The instant action has proceeded concurrently with reexamination proceedings at the
USPTO. Vigilant requested an ex parte reexamination proceeding of claims 1-3 and 7-11 of the
‘669 patent on September 14, 2010. (Dkt. No. 78.) The patent examiner found that a substantial
new question of patentability was raised and the patent entered reexamination. On November 23,
2011, the Examiner issued a final rejection of all claims pending in the reexamination. Id., at 2.
Adrain’s patent prosecution counsel thereafter filed an amendment after final rejection on January
19, 2012, amending each of the claims. On February 10, 2012 the Examiner issued an Advisory
Action that rejected Adrain’s January 19, 2012 filing on the grounds that it raised new issues and
that it presented additional claims without cancelling a corresponding number of finally rejected
claims. Id. On February 28, 2012, the Examiner granted Adrain additional time to file a further
response to its prior final rejection. Id. Adrain filed additional arguments on March 1, 2012.
The Examiner has yet to issue the USPTO’s decision on this filing. Id.
Adrain filed the instant Motion on March 8, 2012, just over one month before the
upcoming claim construction hearing. (Dkt. No. 78.) Adrain argues that “[i]t does not make any
sense for the Court to spend time construing claims that the PTO has rejected and that have been
amended, and thereafter to have a subsequent Markman hearing to construe the claims that issue
out of re-examination.” Id. Adrain asks this Court to stay this case pending the resolution of the
reexamination proceedings “to conserve the Court’s (and the parties’) resources. Id.
III.
Applicable Law
“The district court has the inherent power to control its own docket, including the power to
stay proceedings.” Soverain Software LLC v. Amazon, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex.
2005) (citations omitted). Management of the court’s docket requires “the exercise of judgment,
which must weigh competing interests and maintain an even balance.” Landis v. N. Am. Co., 299
U.S. 248, 254 (1936). Courts typically consider three things when deciding whether to stay
litigation pending reexamination: “(1) whether a stay will unduly prejudice or present a clear
2
tactical advantage to the nonmoving party, (2) whether a stay will simplify issues in question and
trial of the case, and (3) whether discovery is complete and whether a trial date has been set.”
Soverain Software LLC, 356 F. Supp. 2d at 662.
IV.
Analysis
The Court is confronted with an atypical situation where the Plaintiff requests a stay
pending reexamination and the Defendants oppose.
Despite this posture, the traditional
three-factor test provides the framework for the Court’s analysis.
A. Granting a Stay Would Prejudice the Defendants
The undue prejudice factor weighs in favor of denying the stay. Just as Plaintiffs have an
interest in the timely enforcement of patent rights, Defendants may also have an interest in the
timely resolution of patent infringement cases. This case has been pending since May 26, 2010
and the Defendants have counterclaimed for Declaratory Judgment of Non-Infringement and
Invalidity of the ‘669 patent. (Dkt. No. 17, at 4.) With the shadow of patent infringement
allegations looming over its day-to-day business activities, there can be no dispute that the
Defendants have a justiciable interest in the timely resolution of this case. The Examiner has not
yet indicated whether the most recent amendments and/or arguments will place the pending claims
in position for issuance and Adrain will have an opportunity to appeal any rejection of the claims
to the BPAI and the Federal Circuit. The reexamination of the ‘665 patent is therefore far from
complete. As this Court has repeatedly emphasized, the uncertain outcome of reexamination
proceedings often weighs against granting a stay. See, e.g., Ambato Media, LLC v. Clarion Co.,
Ltd., et al., 2:09-cv-242, 2012 U.S. Dist. LEXIS 7558, at *6 (E.D. Tex. Jan. 23, 2012).
Further, Adrain’s chosen timing of filing the Motion also weighs against staying this case.
Despite being well-aware of the efforts and expenses associated with claim construction
3
proceedings, Adrain chose not to file its Motion to Stay until March 8, 2012 – after the joint claim
construction statement, opening claim construction brief, and responsive claim construction brief
were each prepared and submitted to the Court. For these reasons, the first factor weighs against
granting the requested stay.
B. A Stay Would Not Simplify Issues in this Case
This Court has previously reasoned that “it is unwilling to adopt a per se rule that patent
cases should be stayed during reexamination because some of the relevant claims may be
affected.” Soverain Software LLC, 356 F. Supp. 2d at 662-63. In this case, one of the asserted
claims (claim 6) is not subject to reexamination and the outcome of the reexamination of the
remaining claims is still uncertain. The Court believes that the simplest approach (especially
considering the timing of Adrain’s Motion) is to hold the Markman hearing as scheduled and to
address any changes to the asserted claims when and if they occur. Ambato Media, LLC, 2010
U.S. Dist. LEXIS 7558, at *6 (citations omitted) (“[T]he interest of justice will be better served by
dealing with that contingency when and if it occurs, rather than putting this case indefinitely on
hold”). The second factor also weighs in favor of denying the motion before the Court.
C. Discovery and Trial
The third factor, whether discovery is complete and whether a trial date is set, weighs
slightly in favor of denying the stay. For over one year, the parties have known that the Markman
hearing would be held on April 11, 2012.
The discovery deadline with regard to claim
construction issues has already passed and the parties have prepared and filed claim construction
briefs. On the other hand, discovery on the remaining issues in this case is ongoing and the trial is
not set scheduled until the summer of 2013. On balance, this factor weighs slightly against
granting the stay.
4
.
V.
Conclusion
As discussed above, all the relevant factors support denying the Motion before the Court.
Accordingly, the Court DENIES Plaintiff John B. Adrain’s Emergency Motion to Stay Pending
Outcome of Reexamination.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 21st day of March, 2012.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
5
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?